The Complainant is West Coast Parts Distributing d/b/a Box Appliance, United States of America (“United States”), represented by Neugeboren O’Dowd PC, United States.
The Respondent is Henry Wasserman, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2021. On April 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 21, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 29, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 4, 2021. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 24, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 26, 2021. The Center appointed Lynda M. Braun as the sole panelist in this matter on June 2, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant is the exclusive certified service company for Sub-Zero (“Sub-Zero”) refrigerators, Wolf (“Wolf”) cooking appliances, Cove dishwashers, and Asko cleaning appliances in the California geographic market. The Complainant has offered appliance installation and repair services since 1978 under the “Box Appliance” brand name and has used the brand name continuously since then; accordingly, the Complainant claims common law trademark rights in the brand name. The Complainant also has a pending trademark application (United States Trademark Serial No. 90,507,181 for the BOX APPLIANCE trademark), which was filed on February 3, 2021 for installation, maintenance, and repair of appliances in international class 37, with first use and first use in commerce dates of March 13, 1978. The Complainant’s common law and pending trademark application will hereinafter be referred to as the “BOX APPLIANCE Mark”. In addition, the Complainant owns the domain name The Disputed Domain Name was registered on August 16, 2020 and resolves to a website promoting Sub-Zero and Wolf appliance repair services with a California-based area code telephone number. 5. Parties’ Contentions A. Complainant First, in addition to its pending United States trademark application, the Complainant claims common law trademark rights in the mark BOX APPLIANCE by virtue of its longstanding and continuous use since 1978. The Complainant contends that the Disputed Domain Name is confusingly similar to its BOX APPLIANCE Mark. Second, the Complainant contends that Respondent lacks rights or legitimate interests in the Disputed Domain Name in that the Respondent is not operating a bona fide appliance repair service, that its website is comprised of text and images scraped from another appliance repair website, and that any use the Respondent is making of the Disputed Domain Name infringes on the Complainant’s trademark rights. Third, the Complainant claims that the Respondent registered and is using the Disputed Domain Name in bad faith. The Complainant states that the Respondent is using the Disputed Domain Name to misdirect visitors, including the Complainant’s potential customers, to the Respondent’s website. The Complainant recently became aware of several consumers who mistakenly contacted the Respondent rather than the Complainant by locating the telephone number on the Respondent’s website and then scheduled appliance repair services with the Respondent, believing that they were scheduling repair services with the Complainant. The Respondent’s service technicians failed to appear at the appointed time, or appeared but never returned to complete repairs, so the consumers contacted the Complainant to complain. The Complainant further claims that Respondent has engaged in a pattern of registering domain names to prevent the Complainant from reflecting its trademark in a corresponding domain name. The Respondent, who was a defendant in an action filed in The United States District Court for the Central District of California in 2018 by Sub-Zero, and Wolf, had created websites for appliance repair services using the SUB-ZERO and WOLF registered trademarks without permission. In that action, the plaintiffs sued the defendant (the Respondent here) for trademark infringement, cybersquatting, false advertising and unfair competition for having created 26 domain names and accompanying websites for bogus repair services. As part of the resolution of that matter in 2019, the Respondent agreed to a consent judgment prohibiting the use of the SUB-ZERO and WOLF trademarks, including on websites, and from representing that any services were connected with, associated with, sponsored by, or approved by Sub-Zero or Wolf. After entry of the consent judgment, however, the Respondent registered the Disputed Domain Name that is the subject of this proceeding and created the website to which it resolved, which uses the SUB-ZERO word mark. In addition, the Complainant submits that the website at “www.seasonalcomfort.online.com” to which the domain name The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy requires that the Complainant prove the following three elements in order to prevail in this proceeding: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name was registered and is being used in bad faith. A. Identical or Confusingly Similar The first issue here is whether the Complainant has protectable rights in the BOX APPLIANCE Mark. The Complainant has a pending trademark application, rather than a registered trademark. Paragraph 4(a)(i) of the Policy refers merely to a “trademark or service mark” in which a complainant has rights and does not expressly limit the application of the Policy to a registered trademark or service mark. Therefore, the fact that in this case the Complainant does not yet have a registered trademark or service mark for the BOX APPLIANCE Mark does not preclude a finding that it has established trademark or service mark rights for purposes of the Policy, insofar as the Complaint establishes unregistered or common law trademark rights. See Imperial College v. Christophe Dessimoz,WIPO Case No. D2004-0322. To establish unregistered or common law trademark rights for purposes of the UDRP, a complainant must show that its mark has become a distinctive identifier which consumers associate with that complainant’s goods and/or services. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.3. The Panel finds that the Complainant has provided grounds for a finding that its trademark has acquired distinctiveness and goodwill so as to have established common law trademark rights for purposes of the Policy. The Complainant has asserted that it has used the BOX APPLIANCE Mark in association with its appliance installation and repair services for more than 40 years and has provided an example of the use of the BOX APPLICANCE Mark on its website. In addition, the fact that a respondent is shown to have been targeting the complainant’s mark (e.g., based on the manner in which the related website is used or the composition of the domain name) may demonstrate that its mark has achieved significance as a source identifier. The aforegoing facts are sufficient to show the Complainant’s common law trademark rights in the BOX APPLIANCE Mark for purposes of the Policy i.e., by virtue of its longstanding use of the mark in business. The second issue is whether the Disputed Domain Name is identical or confusingly similar to the BOX APPLIANCE Mark. The Disputed Domain Name Moreover, it is well established that a disputed domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a hyphen. The presence or absence of punctuation marks such as hyphens do not prevent a finding of confusing similarity. See Six Continents Hotels, Inc. v. Helen Siew,WIPO Case No. D2004-0656. Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well‑established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182 and WIPO Overview 3.0, section 1.11. Thus, the Panel finds that the Disputed Domain Name is confusingly similar to the BOX APPLIANCE Mark. Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use its BOX APPLIANCE Mark. Nor does the Complainant have any type of business relationship with the Respondent and there is no evidence that the Respondent is commonly known by the Disputed Domain Name or by any name corresponding to it. The Panel finds that nothing on the record before it would support a finding that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. Based on the Respondent’s use of the Disputed Domain Name to resolve to a website with a telephone number that the Respondent changed to a California-based area code to deceive consumers into believing that they reached a website that is operated or endorsed by or otherwise affiliated with the Complainant, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name. See MasterCard International Incorporated v. Dhe Jonathan Firm,WIPO Case No. D2007-0831 (finding that the act of linking the respondent’s website to the complainant’s was not a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name). Finally, the composition of the Disputed Domain Name, comprising the entirety of the BOX APPLIANCE Mark, carries a risk of implied affiliation and cannot constitute fair use here, as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1. Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy. First, the circumstances of this case, including claims that the Disputed Domain Name has been used to resolve to a website that is comprised of text and images scraped from another appliance repair website, and to misdirect visitors, including the Complainant’s potential customers, to the Respondent’s website, support an inference of bad faith. In addition, the Respondent changed the telephone number to one with a California-based area code to mislead potential customers of the Complainant located in California into believing that they were contacting the Complainant, another indication of bad faith. Second, the Disputed Domain Name was registered more than 40 years after the Complainant first began using its BOX APPLIANCE Mark. The Panel finds it likely that the Respondent had the Complainant’s BOX APPLIANCE Mark in mind when registering the Disputed Domain Name, demonstrating bad faith. Third, the Respondent is a serial registrant of infringing domain names through which the Respondent purported to offer appliance repair services in cities across the United States. The Panel also notes that as a result of an adverse final judgment in the California federal court case referenced above, the Respondent, as defendant, entered into a consent decree by which it was prohibited from using the Sub-Zero and Wolf word and design marks, including on any website. After entry of the consent judgment, the Respondent registered the Disputed Domain Name and used the prohibited trademarks on its resolving website. In addition, the Respondent appears to be affiliated or associated with the Respondents Irina Inkina and Aleksandr Kluyev, of the UDRP cases referenced above. The foregoing improper conduct by the Respondent – while not directed at the Disputed Domain Name as such – further supports a finding of bad faith. Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainant. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name Lynda M. Braun
Sole Panelist
Date: June 13, 2021
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